WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Air France v. WhoisGuard Protected, WhoisGuard, Inc. / Muhammad Faisal
Case No. D2016-1935
1. The Parties
The Complainant is Société Air France of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc of Panama City, Panama / Muhammad Faisal of Karachi, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <airfrancetickets.info> (the "Disputed Domain Name") is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 22, 2016. On September 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 23, 2016, the Registrar transmitted by email to the Center its verification response disclosing the registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 27, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on September 30, 2016.
The Center verified that the Complaint together with the amended Complaint (hereinafter referred both together as the "Complaint") satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 1, 2016.
The Center appointed Lynda M. Braun as the sole panelist in this matter on November 3, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a French airline passenger and freight company that is one of the largest in the world. The company was created on October 7, 1933 from the merger of Air Union, Air Orient, Société Générale de Transport Aérien (SGTA), Compagnie Internationale de Navigation Aérienne (CIDNA) and Compagnie Générale Aéropostale. As a result of the merger between Air Inter and Air France in 1997, "Compagnie Nationale Air France" became "Société Air France". The Complainant has also been a member of the Skyteam Alliance since 2000. In 2003, another alliance was created between Air France and KLM to form one of the leading airline groups in Europe.
The Complainant operates a fleet of 583 airplanes serving 231 cities in 103 countries, with a total of 1,500 flights daily. In 2013, the Air France-KLM group carried more than 77.3 million passengers and had revenue of approximately EUR 25 billion.
The Complainant owns a large number of AIR FRANCE trademarks, including international and community trademarks in numerous international classes, as for example International Trade Mark AIR FRANCE registered on May 25, 2003, as well as trademarks in many countries worldwide, including Pakistan, where the Respondent resides (the "AIR FRANCE Mark").
The Complainant operates its principal website at "www.airfrance.com" and has registered many domain names consisting of or incorporating the AIR FRANCE Mark that resolve to this official website.
The Respondent registered the Disputed Domain Name on September 19, 2015, long after the Complainant began using its numerous trademark registrations for the AIR FRANCE Mark in jurisdictions worldwide. The Disputed Domain Name does not currently resolve to an active website; instead it resolves to an Internet page that states: "This site can't be reached. The webpage at http://airfrancetickets.info/ might be temporarily down or it may have moved permanently to a new web address." The Disputed Domain Name previously resolved to a commercial parking page with pay-per-click advertising links to websites offering services identical or similar to those of the Complainant. The Complainant provided screen shots of this parking page in its Complaint. The Respondent has been involved in other UDRP cases in which the Respondent registered domain names that incorporated the trademarks of other well-known third parties.
5. Parties' Contentions
The following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the AIR FRANCE Mark based on longstanding use as well as its numerous trademark registrations for the AIR FRANCE Mark. The Disputed Domain Name consists of the AIR FRANCE Mark in its entirety along with the descriptive or generic word "tickets", followed by the generic Top-Level Domain ("gTLD") ".info". It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or generic word. Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. See also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 (the addition of a descriptive or generic word to a trademark will not avoid a determination that the domain name at issue is confusingly similar); Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; Weight Watchers International Inc. v. Kevin Anthony, WIPO Case No. D2011-2067.
This is especially true where, as here, the descriptive or generic word is associated with the Complainant and its services. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusing similar to the trademark GATEWAY because the domain name contained "the central element of the Complainant's GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business").
Finally, the addition of a gTLD such as ".info" in the Disputed Domain Name is technically required. Thus, it is well established that such element is usually disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its AIR FRANCE Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. The Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name to trade upon the fame of the Complainant.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any evidence to rebut the Complainant's prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, bad faith may be found where the Respondent knew or should have known of the registration and use of the AIR FRANCE Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name long after the Complainant first registered and used the AIR FRANCE Mark.
The longstanding and public use of the AIR FRANCE Mark would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would violate the Complainant's rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant's trademarks). Thus, the timing of the Respondent's registration and use of the Disputed Domain Name indicates that it was made in bad faith.
In addition, the Panel also finds that the Respondent was aware of the AIR FRANCE Mark at the time of registration of the Disputed Domain Name due to the fact that the second level of the Disputed Domain Name consists of the AIR FRANCE Mark with the descriptive or generic word "tickets", a word which is associated with the Complainant and its services.
Second, the Respondent's action of registering the Disputed Domain Name evidences a clear intent to disrupt the Complainant's business by attracting Internet users to the Disputed Domain Name and website to which it previously resolved by creating a likelihood of confusion with the Complainant's AIR FRANCE Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name. In addition, the Respondent's registration and use of the Disputed Domain Name indicates that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainant and its AIR FRANCE Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 ("[t]he only plausible explanation for Respondent's actions appears to be an intentional effort to trade upon the fame of Complainant's name and mark for commercial gain" and "[t]hat purpose is a violation of the Policy").
Moreover, the registration of a domain name that is almost identical to a well-known registered trademark by an entity that has no relationship to that mark is also evidence of bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the Complainant's AIR FRANCE Mark.
The Respondent first directed the Disputed Domain Name to a parking page with pay-per-click advertising links to websites offering services identical or similar to those of the Complainant. This also supports a finding of bad faith.
Finally, the fact that the Respondent is known for a history and pattern of bad faith registration of domain names incorporating the trademarks of third parties is further indication that the Respondent registered and used the Disputed Domain Name in bad faith. See e.g., Philip Morris USA Inc. v. Muhammad Faisal, WIPO Case No. D2016-0621.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <airfrancetickets.info> be transferred to the Complainant.
Lynda M. Braun
Date: November 9, 2016